Complainant is Cath Kidston Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Hammonds LLP, United Kingdom.
Respondent is Value-Domain Com of Osaka-fu, Japan.
2. The Domain Name and Registrar
The disputed domain name <cathkidston.net> is registered with Key-Systems GmbH dba domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 11, 2010. On February 11, 2010, the Center transmitted by email to Key-Systems GmbH dba domaindiscount24.com a request for registrar verification in connection with the disputed domain name. On February 15, 2010, Key-Systems GmbH dba domaindiscount24.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On March 4, 2010, the Center transmitted documents in both English and Japanese to the parties, inviting their comments or submissions regarding the language of the proceeding. Complainant filed a translated Complaint on March 9, 2010. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2010. A Response was filed with the Center on April 5, 2010, but the entity that filed the “Response” was not actually the Respondent in these proceedings, but rather a third party entity. This third party, apparently an authorized reseller of Complainant's goods in Japan, received notice of these proceedings as contact information for its retail stores had been posted on the website operating at the disputed domain name. This “Response” states “[t]he Respondent hereby confirms that it is not related to the assumed domain name owner and has no business affiliation or other economic relation with said entity in any way whatsoever.” No other Response has been filed. Accordingly, the Respondent named as Respondent in the Complaint, showing in the publicly-available WhoIs records, and confirmed by the registrar, has not filed a Response.
The Center appointed Keiji Kondo as the sole panelist in this matter on April 20, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is Cath Kidston Limited.
Complainant was founded by Cath Kidston in 1993, and is a unique global lifestyle and design company. Currently there are 28 shops and concessions in the UK, two shops in the Republic of Ireland and five in Japan. Complainant has spent substantial sums on promoting and marketing its products over a period of years.
Complainant's website receives a lot of page views.
Within the trademark portfolio of Complainant are the following Japanese trademarks:
1. Word combination mark CATH KIDSTON in Roman alphabet and Japanese Katakana characters, registration number 5219676, registered on April 3, 2009 for international class 35 (advertising and business services) and numerous national classes; and
2. Word mark CATH KIDSTON registration number 4742839, registered on January 23, 2004 for international classes 3 (cosmetics and cleaning preparations), 14 (jewelry, precious metals), 18 (leather products), 24 (fabric) and 25 (clothing) and numerous national classes.
Complainant also holds a number of trademarks, including a Community Trade Mark and various other national trademarks, for the word mark ‘Cath Kidston' and the stylised letters ‘Cath Kidston' in several jurisdictions. The jurisdictions covered by these various trademarks are listed here: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, United Kingdom, Turkey, Canada, Hong Kong SAR of China, Japan, Australia and New Zealand.
5. Parties' Contentions
A. Complainant
(1) Goodwill and Reputation
Complainant states that it has built up substantial goodwill and reputation in its various marks and in the distinctive brand name Cath Kidston itself.
(2) Identical or similar features of Complainant's trademarks to the disputed domain name
The disputed domain name was registered on December 13, 2009, and is being utilized to point at the website “www.cathkidston.net”. The website contains unauthorised images of Complainant's products, which Complainant contends infringes both Complainant's copyright and trademark rights. On January 19, 2010, Complainant wrote to Respondent at the postal address and email contact detailed on the WhoIs search, requesting the immediate transfer of the domain name to Complainant and agreement to undertakings preventing Respondent further infringing Complainant's trademark rights. Complainant has to date received no response to the letter or email.
The disputed domain name has identical features to trademarks in which Complainant has rights.
The disputed domain name <cathkidston.net>, the Complainant submits, is identical to its CATH KIDSTON trademark registration and will therefore cause confusion in the mind of the public. In addition, Complainant is also the registered owner of the Internet domain name <cathkidston.com>, which is used as part of its business as it automatically re-directs users to the main “www.cathkidston.co.uk” website.
The domain name <cathkidston.net> is almost identical to the above domain names registered to Complainant, and Complainant submits is likely to lead to confusion as the website to which the domain name points is an unauthorized site selling Cath Kidston products.
(3) Rights or Legitimate Interests in Respect of the Domain Name
Respondent did not have at the time of registration and has not subsequently acquired any rights or legitimate interests in the domain name. This is supported by the following:
1. the term “Cath Kidston” consists of two names which have been used as they are a representation of not only the brand, but of the founder of Complainant, Cath Kidston herself. This combination of names is not one Respondent would have legitimately chosen unless they intended to create the impression of an association with Complainant;
2. by using <cathkidston.net> for the website “www.cathkidston.net”, Respondent is clearly attempting to disrupt Complainant's business by preventing Complainant from using this domain name for legitimate business purposes both in Japan and worldwide;
3. the circumstances in which Respondent is using the domain name indicate that the use has and will confuse people in believing that the domain name is registered to, operated or authorized by, or otherwise connected with Complainant. The domain name <cathkidston.net> directs customers to Respondent's online shopping facility, which is in the same field as services offered via Complainant's websites. There is not and never has been any relationship between Complainant and Respondent that would give rise to any license or permitted use of the trademark CATH KIDSTON.
(4) Bad Faith
Complainant submits that the domain name was registered in a manner which, at the time of registration, took unfair advantage of and was unfairly detrimental to Complainant's rights, and that the domain name has been and is being used in a manner which takes unfair advantage of and is unfairly detrimental to Complainant's rights, and that as such the domain name is being used in bad faith.
Given that the CATH KIDSTON mark is well known, distinctive and not descriptive, and given that Respondent operates in the same field as Complainant, Complainant submits that Respondent is using the mark to unfairly take advantage of Complainant's goodwill for the following reasons;
1. The timing of the registration of the domain name (registered on December 13, 2009) is not coincidental but an indication that Respondent was aware of Complainant's existence, Complainant's several shops located in Japan, and the Complainant's intention to operate in the Japanese retail market. The Complainant further states that this timing suggests that Respondent's registration was in bad faith and intended to take unfair advantage of Complainant's goodwill, reputation and disrupt its business, which is now well established in Japan;
2. Cath Kidston Limited has a substantial reputation and acquired goodwill in Japan and Respondent would have been fully aware of this when it became the registrant of the domain name and is therefore acting in bad faith by continuing to use the domain name;
3. It is likely that potential customers of Complainant will visit Respondent's site and be confused as to whether it has reached an official site of Complainant, which is untrue, due to the look and feel of the website “www.cathkidtson.net” and the products been sold via the website;
4. The reputation of online retail sites is extremely important and so it is crucial to avoid any confusion in the marketplace at or around the time of the expansion of the brand in a particular market; and
5. Complainant indicates that Respondent has not demonstrated any circumstances that would evidence that the registration of the domain name was not registered in bad faith for the purpose of paragraph 3(b)(ix)(3) of the Rules.
Respondent has not been commonly known by the name Cath Kidston. No limited companies have been registered in this or a similar name by Respondent with Companies House for England and Wales nor, so far as Complainant is aware, with any other company register. In addition, Complainant's states that its registered domain names relating to the CATH KIDSTON mark are neither generic nor descriptive.
B. Respondent
The Respondent has filed no response to the Complaint.
C. Third Party Respondent
United Arrows, Ltd., upon receiving Written Notice of the Complaint and Commencement of Administrative Proceeding from the Center, filed a “Response” and confirmed that it was not related to the indicated domain name owner Respondent and had no business affiliation or other economic relation with the Respondent in any way whatsoever. The third party respondent found unauthorized references to the retail stores in Japan which are operated by the third party respondent with the authorization of Complainant. The third party respondent also contends that it had been completely unaware of the unauthorized references to its retail stores in Japan.
6. Discussion and Findings
As a preliminary matter, the Panel notes that the registrar has confirmed the language of the registration agreement for the disputed domain name was Japanese. The Complaint was initially submitted in English, although the Complainant elected to translate the Complaint upon receiving a notification from the Center that the language of the registration agreement differed from the language of the Complaint. The third party “Response” filed in this case was submitted in English. The actual Respondent in this matter has not elected to comment on the language of the proceeding, nor to file any submissions or arguments whatsoever during the pendency of this case. Accordingly, and in light of paragraph 11(a), the Panel determines that English is the proper language of the proceeding, as it would appear that all interested parties who have elected to participate herein are more familiar with the English language, and the Panel believes that the actual Respondent will not be prejudiced by such determination.
A. Identical or Confusingly Similar
The Panel has found that the Complainant has trademark rights to CATH KIDSTON in combination with the corresponding Japanese Katakana characters under the Japanese Trademark Registration No. 5219676, and CATH KIDSTON under the Japanese Trademark Registration No. 4742839. The trademark CATH KIDSTON is not only registered but also widely recognized by consumers of the Complainant's products.
The disputed domain name includes “cathkidston,” which consists of the two parts “cath” and “kidston.” Connecting the two distinctive parts of “Cath Kidston” does not dispel the confusing similarity between the domain name and the trademark. Neither does the use of lower case, especially as capital letters are not permitted in domain names. The Panel finds that the disputed domain name is therefore confusingly similar to the Complainant's trademark. It is well-established that domain name suffixes, in this case “.net,” are disregarded for the purpose of this comparison.
The Panel concludes that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides examples of circumstances that can demonstrate the existence of a respondent's rights or legitimate interests in a domain name:
(i) use of, or preparations to use, a domain name in connection with a bona fide offering of goods or services;
(ii) the fact that a respondent has commonly been known by a domain name; and
(iii) legitimate noncommercial or fair use of a domain name, without intent for commercial gain to mislead consumers or tarnish the trademark.
A complainant must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the respondent to rebut the presumption of absence of rights or legitimate interests.
The third party respondent has confirmed that the website under the disputed domain name <cathkidston.net> has unauthorized references to the retail stores in Japan which are operated by the third party respondent with the authorization of Complainant. It is obvious that such reproduction of the third party respondent's store locations and hours of operation are used to attract the attention of consumers and to make them believe that the website under the domain name <cathkidston.net> is related to the business of Complainant. The fact that these references are placed without the authorization of either Complainant or the third party respondent is strong proof that Respondent does not have any rights or legitimate interests in the disputed domain name.
As to paragraph 4(c)(i) of the Policy, the website at “www.cathkidston.net” carries some pictures of products that appear to be genuine goods of Complainant. However, as mentioned above, it also has unauthorized references to the stores of the third party respondent, which is apparently an authorized Japanese distributor for Complainant. Therefore, it is clear from an observation of the website that it is designed to mislead consumers to believe that Respondent has some business relationship with Complainant. Accordingly, the Panel concludes that Respondent's use of the disputed domain name cannot be found to be in connection with a bona fide offering of goods or services.
The fact that Respondent has not filed any Response to the Complaint also strengthens the above conclusion. Respondent has not submitted a Response to deny Complainant's assertions concerning the inappropriate nature of such use of Complainant's trademark or to explain why the disputed domain name was used for leading potential customers interested in the products of Complainant to the “www.cathkidston.net” website when there is no obvious connection between Respondent and Complainant. Under the circumstances, the Panel has found that Respondent is not in any way engaged in, or preparing for, a bona fide offering of goods or services using the disputed domain name.
The finding mentioned above also leads the Panel to conclude that paragraphs 4(c)(ii) or (iii) of the Policy do not apply to the disputed domain name.
Complainant has established a prima facie case of lack of rights and legitimate interests and there is no rebuttal by Respondent.
The Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name suggests some connection with Complainant's products known by the name of its trademark. Nevertheless, Respondent has failed to submit any Response to establish its connection to Complainant. Instead, the third party respondent has confirmed that Respondent has no relationship with Complainant.
On the other hand, the trademark CATH KIDSTON is well-known among customers. The disputed domain name consists of the two parts that constitute Complainant's trademark. The Panel infers from this that Respondent registered the disputed domain name with Complainant's trademark CATH KIDSTON in mind. Indeed, Respondent has not come forward to suggest otherwise.
The Panel is of the view that Respondent intentionally attracted for commercial gain Internet users to its website that shows products of Complainant's goods, intending to create a likelihood of confusion, or benefiting from the goodwill associated, with the trademark. In the absence of any other credible explanation from Respondent, the Panel considers that the use of the disputed domain name was designed to generate profit for Respondent by attracting customers seeking the products of Complainant.
The likelihood of confusion is not diminished by the fact that users arriving at that page will realize that they have reached the wrong destination. As its own investigation, the Panel has visited the website at “www.cathkidston.net” and found that it has a notice meaning that it is not an official website of Complainant. It also appears to offer the genuine goods of Complainant. However, paragraph 4(b)(iv) of the Policy is concerned with the intentional attracting of Internet users. Here, the Respondent used the disputed domain name to create “initial interest confusion” on the part of Internet users seeking the products of Complainant in order to profit from at least some of that traffic. Therefore, even though the goods offered at the website may be genuine, the Panel cannot help but find use in bad faith.
Incidentally, parallel importation of genuine goods is permissible under Japanese law. However, it is irrelevant to the conclusion mentioned above. Even assuming that Respondent offers genuine goods, it cannot be denied that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's trademark, CATH KIDSTON, as to the source, sponsorship, affiliation, or endorsement of its website. Indeed, it is due to this impersonation that the third party respondent, which is apparently an authorized Japanese distributor for the Complainant, received Written Notice of the Complaint and Commencement of Administrative Proceeding from the Center. As Respondent has not provided any explanation for its actions, nor come forward to argue that it potentially has rights as a reseller of Complainant's goods, the Panel (as discussed above) is unable to conclude that the Respondent has any such rights. Accordingly, the Panel is satisfied that Respondent registered the disputed domain name with the intent to derive revenue as a result of consumer confusion in line with paragraph 4(b)(iv) of the Policy.
Therefore, the Panel concludes that the disputed domain name was registered and has been used in bad faith.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <cathkidston.net> be transferred to Complainant.
Keiji Kondo Sole Panelist
Dated: April 27, 2010
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